Choosing a Patent Attorney
Each innovative company sooner or later raises the question of choosing a law firm to protect its rights to inventions. At Parallels, this topic came about when patents were merged with Corel. Both Parallels and Corel had their patent attorneys. There was an option to choose one of them and continue work without much effort. But we decided to approach this issue thoroughly. The process did not go as smoothly as we would like, so I will share my best practices. I hope this allows you to avoid surprises and pitfalls in the future.
It is immediately necessary to clarify that many aspects depend on the type of your company and the specifics of your business. First you need to analyze and understand what exactly you are looking for. Here I suggest a look at the following points:
1. Countries in which you would like to protect your invention
Exclusive rights are territorial. To determine which country to protect, think about where your main market and sales are, look at competitors, where and what they patent.
Moreover, you must understand that not every lawyer is suitable for your task. Make sure that you only consider patent attorneys registered in the country of origin. Of course, there is an option to work through intermediaries, but do you need it? Pay both the intermediary and the patent attorney, despite the fact that in this case the quality of work is reduced due to the lack of proper communication and delays in the exchange of information and documents.
2. Budget
This item requires no explanation. A little tip to simplify negotiations and your capabilities: write down the desired and maximum amount that you are willing to pay for creating one application and for the entire process of obtaining a patent. Although the hourly fee in the USA, many companies can agree on different schemes of discounts or fixed prices for certain types of jobs.
The more fixed positions prescribed (for example, for filing one application, the answer to the examiner’s objection and negotiations with him), the more control over costs and budget planning opportunities. It is also necessary to remember that the cost of services differs in different parts of the country, and the location does not affect the interaction with the patent office (within the same country).
3. Portfolio size, potential workload
Not all firms, and especially not all patent attorneys, can maintain and expand a large patent portfolio. This takes into account the flow of new ideas, the number of applications considered by the patent office, and your strategy for expanding the portfolio. Moreover, the law firm itself may be large, but the department dealing with patenting may consist of one person.
In order not to get into an unpleasant situation and not to give all your portfolio into the hands of one person who is hiding behind a large company, spend your time and conduct a thorough due diligence.
4. In what area are your inventions
Another point for your due diligence: does the patent attorney you are considering have the knowledge and experience in the field of your inventions. This is a pretty important point. It will directly affect the quality of writing applications. Without the necessary training and knowledge, a person simply cannot fully understand your idea and describe it in detail in a document, which is required for the effective protection of inventions.
5. Urgency of choice
How much time you can spend searching and choosing. For example, if you are looking for an attorney to quickly submit formal documents or pay a fee, it makes no sense to waste time and arrange a tender. In such cases, you can simply go through the list of registered attorneys in the country, ask for advice on various channels and forums.
If you need a company to work and maintain a large patent portfolio, and the time frame allows you to spend some amount of time choosing a good company or an individual lawyer, then why not spend more time on this process.
6. How relevant are licensing and litigation issues to you?
Each law firm has its own goals and services. Somewhere there are huge litigation departments, and somewhere there are none at all. Do not completely throw this question aside: since you are patenting inventions, litigation can come out at any time.
7. Are you going to transfer all your intellectual property to one company?
Many patent companies also offer trademark, copyright registration, and more. Are you considering managing a full package of your intellectual property with one company? This may require a more comprehensive analysis of the company, prices and quality of work in all areas.
There are quite a lot of ways to search and select companies, on the advice of acquaintances / colleagues, simply search by location, by all licensed patent attorneys in the required country. It depends on your requirements, time and money.
Tender
There are various programs for the effective conduct of open and transparent tenders, for example scanmarket.com. With open tenders, you put a deadline for submitting applications, publish resources for these applications, and then carry out several stages of selecting companies from the submitted applications.
At the first stages, you can not even interact with the companies themselves, but simply filter them out according to the information in the initial application (price, speed of work, experience, specialization, etc.). At the next stages, you can arrange testing and conversations with management and attorneys, which will give a better idea of people, team and attitude towards customers. This type is suitable for large organizations with an impressive portfolio and workload.
At our company, we decided to dispense with the use of third-party software and requested proposals from selected companies by e-mail. So you can pre-select the companies that are worth considering, and thereby slightly reduce the time spent waiting for applications. It will be necessary to draw up an RFQ (request for quotes), a test task and arrange an internal evaluation of proposals.
The tender data is hidden, and no one can take part in it, except for the selected companies. Also, unlike an open tender, participating companies will not see the offered prices and other data of competing companies.
In both cases, you select the stages of the selection process and the criteria.
Recommendations
Do not underestimate the effectiveness of networking. Various conferences (for example, EPO Patent Information Conference), workshops, webinars, channels in different platforms (for example, “IPconnect” in a telegram) will help here. Chat with your colleagues in other companies, find out about their experience and contractors.
Web search
Law firms also need to PR, many of them publish articles on various topics, talk about their legal experience and success. Look at reports and company ratings.
Do not forget to check the specialists found in the register of registered patent attorneys (for the USA – oedci.uspto.gov/OEDCI/practitionerSearchEntry) However, the registry will not give you an idea of the quality of work of these people. To do this, you will need to look for applications on which they worked, see their history and technical sphere; search for any information about their experience and knowledge (LinkedIn to help). There are also sites and programs with statistics on applications and the performance of different companies.
Also in the USPTO (US Patent Office) there are various links that help to file a patent application, deal with the system and find attorneys: www.uspto.gov/patents-getting-started/legal-assistance-and-resources.
Choose a company that will take into account your interests: make an individual proposal for all stages of the procedure, advise on the strategy and help you stay within the budget. So you can focus on your work and rely on selected people.
